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l.html#d0e302450) and (3), that would raise an issue of double patenting if one of the applications became a patent. Where this
issue can be addressed without violating the confidential status of applications (35 U.S.C. 122 (mpep-9015-appx-l.html#d0e303054)
), the courts have sanctioned the practice of making applicant aware of the potential double patenting problem if one of the
applications became a patent by permitting the examiner to make a provisional rejection on the ground of double patenting. In re
Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits of such
a provisional rejection can be addressed by both the applicant and the examiner without waiting for the first patent to issue.
The provisional double patenting rejection should continue to be made by the examiner in each application as long as there are
conflicting claims in more than one application unless that provisional double patenting rejection is the only rejection remaining in
at least one of the applications.
1.
If a provisional nonstatutory obviousness-type double patenting (ODP) rejection is the only rejection remaining in the earlier filed
of the two pending applications, while the later-filed application is rejectable on other grounds, the examiner should withdraw that
rejection and permit the earlier-filed application to issue as a patent without a terminal disclaimer. If the ODP rejection is the only
rejection remaining in the later-filed application, while the earlier-filed application is rejectable on other grounds, a terminal
disclaimer must be required in the later-filed application before the rejection can be withdrawn.
If provisional ODP rejections in two applications are the only rejections remaining in those applications, the examiner should
withdraw the ODP rejection in the earlier filed application thereby permitting that application to issue without need of a terminal
disclaimer. A terminal disclaimer must be required in the later-filed application before the ODP rejection can be withdrawn and the
application permitted to issue. If both applications are filed on the same day, the examiner should determine which application
claims the base invention and which application claims the improvement (added limitations). The ODP rejection in the base
application can be withdrawn without a terminal disclaimer, while the ODP rejection in the improvement application cannot be
withdrawn without a terminal disclaimer.
Where there are three applications containing claims that conflict such that an ODP rejection is made in each application based
upon the other two, it is not sufficient to file a terminal disclaimer in only one of the applications addressing the other two
applications. Rather, an appropriate terminal disclaimer must be filed in at least two of the applications to link all three together.
This is because a terminal disclaimer filed to obviate a double patenting rejection is effective only with respect to the application in
which the terminal disclaimer is filed; it is not effective to link the other two applications to each other.
D. Reexamination Proceedings
A double patenting issue may raise a substantial new question of patentability of a claim of a patent, and thus be addressed in a
reexamination proceeding. In re Lonardo, 119 F.3d 960, 966, 43 USPQ2d 1262, 1266 (Fed. Cir. 1997) (In giving the Director
authority under 35 U.S.C. 303(a) (mpep-9015-appx-l.html#d0e306491) in determining the presence of a substantial new question of
patentability, Congress intended that the phrases patents and publications and other patents or publications in section 303(a)
not be limited to prior art patents or printed publications. (emphasis added)). Accordingly, if the issue of double patenting was not
addressed during original prosecution, it may be considered during reexamination.
Double patenting may exist where a reference patent or application and the patent under reexamination are filed by inventive
entities that have at least one inventor in common and/or are filed by a common owner/assignee. Where the patent under
reexamination was granted on or after December 10, 2004, double patenting may also exist where the inventions claimed in the
reference and reexamination proceeding resulted from activities undertaken within the scope of a joint research agreement
pursuant to 35 U.S.C. 103(c)(2) (mpep-9015-appx-l.html#d0e302450) and (3), and if evidence of the joint research agreement has
been made of record in the patent being reexamined or in the reexamination proceeding. A double patenting rejection may NOT
be made on this basis if the patent under reexamination issued before December 10, 2004. See MPEP 804.04
(s804.html#d0e103611) . The prior art exclusion under 35 U.S.C. 103(c) (mpep-9015-appx-l.html#d0e302450) cannot be used to
overcome an obvious double patenting rejection. See MPEP 706.02(l) (s706.html#d0e58220) for more information on 35 U.S.C.
103(c) (mpep-9015-appx-l.html#d0e302450) . See MPEP 2258 (s2258.html#d0e229082) for more information on making double
patenting rejections in reexamination proceedings. Subsection II., below, describes situations wherein a double patenting rejection
would be appropriate. In particular, see paragraph II.B.1. for the analysis required to determine the propriety of an obviousness-
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8.30
A rejection based on double patenting of the same invention type finds its support in the language of 35 U.S.C. 101 (mpep-9015appx-l.html#d0e302376) which states that whoever invents or discovers any new and useful process... may obtain a patent
therefor... (Emphasis added). Thus, the term same invention, in this context, means an invention drawn to identical subject
matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re
Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101 (mpep-9015-appx-l.html#d0e302376) ) double patenting rejection can be overcome by canceling or
amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal
disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101 (mpep-9015-appx-l.html#d0e302376) .
Examiner Note:
The above form paragraph must be used as a heading for all subsequent double patenting rejections of the statutory (same
invention) type using either of form paragraphs 8.31 (#fp8.31) or 8.32 (#fp8.32) .
8.31
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Claim [1] rejected under 35 U.S.C. 101 (mpep-9015-appx-l.html#d0e302376) as claiming the same invention as that of claim [2] of
prior U.S. Patent No. [3]. This is a statutory double patenting rejection.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 8.30 (#fp8.30) and is used only for double patenting rejections
of the same invention claimed in an earlier patent; that is, the scope of the inventions claimed is identical.
2. If the claims directed to the same invention are in another copending application, do not use this form paragraph. A
provisional double patenting rejection should be made using form paragraph 8.32 (#fp8.32) .
3. Do not use this form paragraph for nonstatutory-type double patenting rejections. If nonstatutory type, use appropriate
form paragraphs 8.33 (#fp8.33) to 8.39 (#fp8.39) .
4. This form paragraph may be used where the reference patent and the pending application are:
by the same inventive entity, or
by a different inventive entity and are commonly assigned even though there is no common inventor, or
not commonly assigned but have at least one common inventor, or
for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint
research agreement under pre-AIA 35 U.S.C. 103(c) () , or
for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) () or deemed to be
commonly owned under 35 U.S.C. 102(c) () as of the effective filing date under 35 U.S.C. 100(i) () of the claimed
invention.
5. In bracket 3, insert the number of the reference patent.
6. For applications being examined under pre-AIA law: If the patent is to a different inventive entity and is commonly
assigned with the application, form paragraph 8.27.fti (#fp8.27.fti) should additionally be used to require the assignee to
name the first inventor.
7. If evidence is of record to indicate that the patent is prior art under either pre-AIA 35 U.S.C. 102(f) () or (g) () , a rejection
should also be made using form paragraphs 7.15.fti (#fp7.15.fti) and/or 7.19.fti (#fp7.19.fti) in addition to this double
patenting rejection.
8. If the patent is to a different inventive entity from the application and the effective U.S. filing date of the patent antedates
the effective filing date of the application, a rejection under pre-AIA 35 U.S.C. 102(e) () should additionally be made using
form paragraph 7.15.02.fti (#fp7.15.02.fti) .
9. For applications being examined under the AIA: If the patent is to a different inventive entity and is commonly assigned
with the application, form paragraph 8.27.aia (#fp8.27.aia) should additionally be used to request that the applicant take
action to amend or cancel claims such that the application no longer contains claims directed to the same invention. A
rejection under 35 U.S.C. 102(a)(2) () or 35 U.S.C. 103 () should also be made if appropriate.
8.32
Claim [1] provisionally rejected under 35 U.S.C. 101 () as claiming the same invention as that of claim [2] of copending Application
No. [3]. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact
been patented.
Examiner Note:
1. This form paragraph must be preceded by form paragraph 8.30 (#fp8.30) and is used only for double patenting rejections
of the same invention claimed in another copending application; that is, the scope of the claimed inventions is identical.
2. If the claims directed to the same invention are from an issued patent, do not use this paragraph. See form paragraph
8.31 (#fp8.31) .
3. Do not use this paragraph for nonstatutory-type double patenting rejections. See form paragraphs 8.33 (#fp8.33) to 8.39
(#fp8.39) .
4. This form paragraph may be used where the patentably indistinct claims are in a copending application that is:
by the same inventive entity, or
by a different inventive entity and is commonly assigned even though there is no common inventor, or
not commonly assigned but has at least one common inventor, or
for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint
research agreement under pre-AIA 35 U.S.C. 103(c) () , or
for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) () or deemed to be
commonly owned under 35 U.S.C. 102(c) () as of the effective filing date under 35 U.S.C. 100(i) () of the claimed
invention.
5. Form paragraph 8.28.fti (#fp8.28.fti) or 8.28.aia (#fp8.28.aia) , as appropriate, should also be used.
6. In bracket 3, insert the number of the reference application.
7. A provisional double patenting rejection should also be made in the reference application.
8. For applications being examined under pre-AIA law: If the copending application is by a different inventive entity and is
commonly assigned, form paragraph 8.27.fti (#fp8.27.fti) should additionally be used to require the assignee to name the
first inventor.
9. If evidence is also of record to show that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) () or
(g) () , a rejection should also be made in the other application using form paragraphs 7.15.fti (#fp7.15.fti) and/or 7.19.fti
(#fp7.19.fti) in addition to this provisional double patenting rejection.
10. If the applications do not have the same inventive entity and effective U.S. filing date, a provisional pre-AIA 35 U.S.C.
102(e) () rejection should additionally be made in the later-filed application using form paragraph 7.15.01.fti (#fp7.15.01.fti) .
11. For applications being examined under the AIA: If the patent is to a different inventive entity and is commonly assigned
with the application, form paragraph 8.27.aia (#fp8.27.aia) should additionally be used to request that the applicant take
action to amend or cancel claims such that the applications no longer contain claims directed to the same invention. A
rejection under 35 U.S.C. 102(a)(2) () or 35 U.S.C. 103 () should also be made if appropriate.
If the same invention is not being claimed twice, an analysis must be made to determine whether a nonstatutory basis for double
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patenting exists.
1. Obviousness-Type
A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at
least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim
is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); and In re Longi, 759 F.2d 887, 225 USPQ
645 (Fed. Cir. 1985). In determining whether a nonstatutory basis exists for a double patenting rejection, the first question to be
asked is does any claim in the application define an invention that is anticipated by, or is merely an obvious variation of, an
invention claimed in the patent? If the answer is yes, then an obviousness-type nonstatutory double patenting rejection may be
appropriate. Obviousness-type double patenting requires rejection of an application claim when the claimed subject matter is not
patentably distinct from the subject matter claimed in a commonly owned patent, or a non-commonly owned patent but subject
to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) (mpep-9015-appx-l.html#d0e302450) and (3), when the issuance
of a second patent would provide unjustified extension of the term of the right to exclude granted by a patent. See Eli Lilly & Co. v.
Barr Labs., Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001); Ex parte Davis, 56 USPQ2d 1434, 1435-36 (Bd. Pat. App. &
Inter. 2000).
A double patenting rejection of the obviousness-type, if not based on an anticipation rationale, is analogous to [a failure to meet]
the nonobviousness requirement of 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) except that the patent principally
underlying the double patenting rejection is not considered prior art. In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).
Therefore, the analysis employed in an obviousness-type double patenting rejection parallels the guidelines for analysis of a 35
U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) obviousness determination. In re Braat, 937 F.2d 589, 19 USPQ2d 1289 (Fed. Cir.
1991); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985).
Since the analysis employed in an obviousness-type double patenting determination parallels the guidelines for a 35 U.S.C.
103(a) (mpep-9015-appx-l.html#d0e302450) rejection, the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 (mpep-9015appx-l.html#d0e302450) are employed when making an obvious-type double patenting analysis. These factual inquiries are
summarized as follows:
(A) Determine the scope and content of a patent claim relative to a claim in the application at issue;
(B) Determine the differences between the scope and content of the patent claim as determined in (A) and the claim in the
application at issue;
(C) Determine the level of ordinary skill in the pertinent art; and
(D) Evaluate any objective indicia of nonobviousness.
The conclusion of obviousness-type double patenting is made in light of these factual determinations.
Any obviousness-type double patenting rejection should make clear:
(A) The differences between the inventions defined by the conflicting claims a claim in the patent compared to a claim in
the application; and
(B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue is
anticipated by, or would have been an obvious variation of, the invention defined in a claim in the patent.
When considering whether the invention defined in a claim of an application would have been an obvious variation of the invention
defined in the claim of a patent, the disclosure of the patent may not be used as prior art. General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1279, 23 USPQ2d 1839, 1846 (Fed. Cir. 1992). This does not mean that one is
precluded from all use of the patent disclosure.
The specification can be used as a dictionary to learn the meaning of a term in the patent claim. Toro Co. v. White Consol. Indus.,
Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999)([W]ords in patent claims are given their ordinary meaning in
the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning.);
Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) (Where there are
several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward
the proper meanings.). See also MPEP 2111.01 (s2111.html#d0e200409) . Further, those portions of the specification which
provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the
application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619,
622 (CCPA 1970). The court in Vogel recognized that it is most difficult, if not meaningless, to try to say what is or is not an
obvious variation of a claim, but that one can judge whether or not the invention claimed in an application is an obvious variation
of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first
determine how much of the patent disclosure pertains to the invention claimed in the patent because only [t]his portion of the
specification supports the patent claims and may be considered. The court pointed out that this use of the disclosure is not in
contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103 (mpep9015-appx-l.html#d0e302450) , since only the disclosure of the invention claimed in the patent may be examined.
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would have been anticipated by, an obvious variation of, the invention defined in a claim in the patent. See, e.g., In re Berg, 140
F.3d 1438, 46 USPQ2d 1226 (Fed. Cir. 1998) (the court applied a one-way test where both applications were filed the same day).
If a claimed invention in the application would have been obvious over a claimed invention in the patent, there would be an
unjustified timewise extension of the patent and an obvious-type double patenting rejection is proper. Unless a claimed invention
in the application would have been anticipated by, or obvious over a claimed invention in the patent, no double patenting rejection
of the obvious-type should be made, but this does not necessarily preclude a rejection based on another type of nonstatutory
double patenting (see MPEP 804 (s804.html#d0e98894) , paragraph II.B.2. below).
Similarly, even if the application at issue is the earlier filed application, only a one-way determination of obviousness is needed to
support a double patenting rejection in the absence of a finding: (A) of administrative delay on the part of the Office causing delay
in prosecution of the earlier filed application; and (B) that applicant could not have filed the conflicting claims in a single (i.e., the
earlier filed) application. See MPEP 804 (s804.html#d0e98894) , paragraph II.B.1.(b) below.
Form paragraph 8.33 (#fp8.33) and the appropriate one of form paragraphs 8.34 (#fp8.34) - 8.37 (#fp8.37) may be used to make
nonstatutory rejections of the obvious-type.
8.33
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in
the statute) so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent and to
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prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at
issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because
the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re
Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re
Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel,
422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) (mpep-9020-appx-r.html#d0e326459) or 1.321(d) () may be
used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference
application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of
activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37
CFR 1.321(b) () .
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/.
The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out
completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved
immediately upon submission. For more information about eTerminal Disclaimers, refer to
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Examiner Note:
This form paragraph is to be used as a heading before a nonstatutory double patenting rejection using any of form paragraphs
8.34 (#fp8.34) - 8.39 (#fp8.39) . Although nonstatutory double patenting is sometimes called obviousness-type double patenting
(ODP), an obviousness analysis is required only if the examined application claim(s) is not anticipated by the reference claim(s).
8.34
Claim [1] rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of U.S. Patent No. [3].
Although the claims at issue are not identical, they are not patentably distinct from each other because [4].
Examiner Note:
1. Form paragraph 8.33 (#) must precede any one of form paragraphs 8.34 (#fp8.34) to 8.39 (#fp8.39) and must be used
only ONCE in an Office action.
2. This form paragraph is used for nonstatutory double patenting rejections based upon a patent.
3. If the nonstatutory double patenting rejection is based upon another application, do not use this form paragraph. A
provisional double patenting rejection should be made using form paragraph 8.33 (#) and either form paragraph 8.35
(#fp8.35) or 8.37 (#fp8.37) .
4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent which is:
by the same inventive entity, or
by a different inventive entity and is commonly assigned even though there is no common inventor, or
not commonly assigned but has at least one inventor in common, or
for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint
research agreement under pre-AIA 35 U.S.C. 103 () , or
for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) () or deemed to be
commonly owned under 35 U.S.C. 102(c) () as of the effective filing date under 35 U.S.C. 100(i) () of the claimed
invention.
5. In bracket 3, insert the number of the patent.
6. For applications being examined under pre-AIA law: If evidence indicates that the patent is prior art under pre-AIA 35
U.S.C. 102(f) () or (g) () , a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f) () /103(a) () or 102(g) ()
,/103(a) () using form paragraph 7.21.fti (#fp7.21.fti) , unless the patent is disqualified under pre-AIA 35 U.S.C. 103(c) () as
prior art in a pre-AIA 35 U.S.C. 103(a) () rejection.
7. For applications being examined under pre-AIA law: If the patent is to a different inventive entity and has an earlier
effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) /103(a) (mpep9015-appx-l.html#d0e302450) may be made using form paragraph 7.21.02.fti (#fp7.21.02.fti) . Rejections under pre-AIA 35
U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) /103(a) (mpep-9015-appx-l.html#d0e302450) should not be made or
maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) (mpep9015-appx-l.html#d0e302450) rejection.
8. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) () or 35 U.S.C. 103 () should also
be made if appropriate.
Examiner Note:
1. Form paragraph 8.33 (#fp8.33) must precede any one of form paragraphs 8.34 (#fp8.34) to 8.39 (#fp8.39) and must be
used only ONCE in an Office action.
2. This form paragraph should be used when the patentably indistinct claims are in another copending application.
3. If the patentably indistinct claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 (#fp8.33) and
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8.34 (#fp8.34) .
4. This form paragraph may be used where the patentably indistinct claims are in a copending application that is:
by the same inventive entity, or
commonly assigned even though there is no common inventor, or
not commonly assigned but has at least one common inventor, or
for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint
research agreement under pre-AIA 35 U.S.C. 103(c) () , or
for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) () or deemed to be
commonly owned under 35 U.S.C. 102(c) () as of the effective filing date under 35 U.S.C. 100(i) () of the claimed
invention.
5. For applications being examined under pre-AIA law: If the reference application is currently commonly assigned but the
file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was
made, form paragraph 8.28.fti (#fp8.28) may be used in addition to this form paragraph to also resolve any issues relating to
priority under pre-AIA 35 U.S.C. 102(f) () and/or (g) () .
6. In bracket 3, insert the number of the reference application.
7. A provisional nonstatutory double patenting rejection should also be made in the reference application.
8. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other
under pre-AIA 35 U.S.C. 102(f) () or (g) () and the copending application has not been disqualified under pre-AIA 35 U.S.C.
103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection, a rejection should additionally be made in the other
application under pre-AIA 35 U.S.C. 102(f) () /103(a) () or 102(g) () )/103(a) () using form paragraph 7.21.fti (#fp7.21) .
9. For applications being examined under pre-AIA law: If the disclosure of one application may be used to support a
rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph
7.21.01.fti (#fp7.21.01.fti) to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) () /103(a) () in the later filed
application. Rejections under pre-AIA 35 U.S.C. 102(e) () /103(a) () should not be made or maintained if the patent is
disqualified under pre-AIA 35 U.S.C. 103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection.
10. For applications being examined under pre-AIA law: See MPEP 1490 (s1490.html#d0e146976) for guidance regarding
terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections
remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) () and (e) () are not taken into account in
determining which is the earlier-filed application for double patenting purposes.
11. For applications being examined under the AIA: See MPEP 1490 (s1490.html#d0e146976) for guidance regarding
terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections
remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) () and (e) () are not taken into account in
determining which is the earlier-filed application when the application is being examined under the AIA for double patenting
purposes.
12. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) () or 35 U.S.C. 103 () should also
be made if appropriate.
13. In bracket 4, provide appropriate rationale for obviousness of claims being rejected over the claims of the cited
application.
8.36
Claim [1] rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of U.S.
Patent No. [3] in view of [4]. [5]
Examiner Note:
1. Form paragraph 8.33 (#fp8.33) must precede any one of form paragraphs 8.34 (#fp8.34) to 8.39 (#fp8.39) and must be
used only ONCE in an Office action.
2. This form paragraph is used for nonstatutory double patenting rejections where the primary reference is a patent that
includes claims patentably indistinct from those in the present application.
3. If the nonstatutory double patenting rejection is based on another application, do not use this form paragraph. A
provisional nonstatutory double patenting rejection should be made using form paragraphs 8.33 (#fp8.33) and either 8.35
(#fp8.35) or 8.37 (#fp8.37) .
4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent which is:
by the same inventive entity, or
by a different inventive entity and is commonly assigned even though there is no common inventor, or
not commonly assigned but has at least one common inventor, or
for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint
research agreement under pre-AIA 35 U.S.C. 103(c) () , or
5. In bracket 3, insert the number of the primary reference patent.
6. In bracket 4, insert the secondary reference.
7. In bracket 5, insert an explanation of the obviousness analysis.
8. For applications being examined under pre-AIA law: If evidence shows that the primary reference patent is prior art under
pre-AIA 35 U.S.C. 102(f) () or (g) () , a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f) () /103(a) () or
102(g) () )/103(a) () using form paragraph 7.21.fti (#) , unless the patent is disqualified under pre-AIA 35 U.S.C. 103(c) () as
prior art in a pre-AIA 35 U.S.C. 103(a) () rejection.
9. For applications being examined under pre-AIA law: If the primary reference patent issued to a different inventive entity
and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) () /103(a) () may be made using form
paragraph 7.21.02.fti. (#fp7.21.02.fti) Rejections under pre-AIA 35 U.S.C. 102(e) () /103(a) () should not be made or
maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) ()
rejection.
10. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) () or 35 U.S.C. 103 () should also
be made if appropriate.
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Examiner Note:
1. Form paragraph 8.33 (#fp8.33) must precede any one of form paragraphs 8.34 (#fp8.34) to 8.39 (#fp8.39) and must be
used only ONCE in an Office action.
2. This form paragraph is used for nonstatutory double patenting rejections requiring an obviousness analysis where the
primary reference is a copending application.
3. If the patentably indistinct claims are in a patent, do not use this form paragraph, use form paragraph 8.36 (#fp8.36) .
4. This form paragraph may be used where the patentably indistinct claims are in a copending application that is:
by the same inventive entity, or
commonly assigned even though there is no common inventor, or
not commonly assigned but has at least one common inventor, or
for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint
research agreement under pre-AIA 35 U.S.C. 103(c) () , or
5. For applications being examined under pre-AIA law: If the present and reference applications are currently commonly
assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later
invention was made, form paragraph 8.28.fti (#fp8.28.fti) may be used in addition to this form paragraph to also resolve any
issues relating to priority under pre-AIA 35 U.S.C. 102(f) () and/or (g) () .
6. For applications being examined under the AIA: If the copending application is to a different inventive entity and is
commonly assigned with the application, form paragraph 8.28.aia (#fp8.28.aia) should additionally be used if there is no
evidence of common ownership as of the effective filing date of the claimed invention. A rejection under 35 U.S.C. 102(a)(2)
() or 35 U.S.C. 103 () should also be made if appropriate.
7. In bracket 3, insert the number of the reference copending application.
8. In bracket 4, insert the secondary reference.
9. In bracket 5, insert an explanation of the obviousness analysis.
10. A provisional nonstatutory double patenting rejection should also be made in the copending reference application.
11. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other
under pre-AIA 35 U.S.C. 102(f) (mpep-9015-appx-l.html#d0e302383) or (g) () and the copending application has not been
disqualified under pre-AIA 35 U.S.C. 103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection, a rejection should
additionally be made under pre-AIA 35 U.S.C. 102(f) (mpep-9015-appx-l.html#d0e302383) /103(a) () or 102(g) () /103(a) ()
using form paragraph 7.21.fti (#fp7.21.fti) .
12. For applications being examined under pre-AIA law: If the disclosure of one application may be used to support a
rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph
7.21.01.fti (#fp7.21.01.fti) to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) () /103(a) () in the application with
the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e) () /103(a) () should not be made or maintained
if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection.
13. For applications being examined under pre-AIA law: See MPEP 1490 (s1490.html#d0e146976) for guidance regarding
terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections
remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) () and (e) are not taken into account in
determining which is the earlier-filed application for double patenting purposes.
14. For applications being examined under the AIA: See MPEP 1490 (s1490.html#d0e146976) for guidance regarding
terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections
remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) () and (e) are not taken into account in
determining which is the earlier-filed application when the application is being examined under the AIA for double patenting
purposes.
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Examiner Note:
1. Form paragraph 8.33 (#fp8.33) must precede any one of form paragraphs 8.34 (#fp8.34) to 8.39 (#fp8.39) and must be
used only ONCE in an Office action.
2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting
rejection based on In re Schneller has been obtained.
3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one
claim of, an issued U.S. Patent which is commonly owned or where there is common inventorship (one or more inventors in
common).
4. In bracket 3, insert the number of the patent.
5. In bracket 4, insert a description of the subject matter being claimed which is covered in the patent.
6. For applications being examined under pre-AIA law: If evidence indicates that the reference patent is prior art under preAIA 35 U.S.C. 102(f) () or (g) () , a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f) () /103(a) () or
102(g) () /103(a) () using form paragraph 7.21.fti (#fp7.21.fti) , unless the patent is disqualified under pre-AIA 35 U.S.C.
103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection.
7. For applications being examined under pre-AIA law: If the patent is to another inventive entity and has an earlier U.S.
filing date, a rejection under pre-AIA 35 U.S.C. 102(e) () /103(a) () may be made using form paragraph 7.21.02.fti (#) .
Rejections under pre-AIA 35 U.S.C. 102(e) () /103(a) () should not be made or maintained if the patent is disqualified under
pre-AIA 35 U.S.C. 103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection.
8. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) () or 35 U.S.C. 103 () should also
be made if appropriate.
8.39
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Examiner Note:
1. Form paragraph 8.33 (#fp8.33) must precede any one of form paragraphs 8.34 (#fp8.34) to 8.39 (#fp8.39) and must be
used only ONCE in an Office action.
2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting
rejection based on In re Schneller has been obtained.
3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one
claim of, another copending application which is commonly owned or where there is common inventorship (one or more
inventors in common).
4. In bracket 3, insert the number of the reference copending application.
5. In bracket 4, insert a description of the subject matter being claimed which is covered in the copending application.
6. For applications being examined under pre-AIA law: If the copending application is currently commonly assigned but the
file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was
made, form paragraph 8.28.fti (#fp8.28.fti) may be used in addition to this form paragraph to also resolve any issues relating
to priority under pre-AIA 35 U.S.C. 102(f) () and/or (g) () .
7. For applications being examined under the AIA: If the copending application is to a different inventive entity and is
commonly assigned with the application, form paragraph 8.28.aia (#fp8.28.aia) should additionally be used if there is no
evidence of common ownership as of the effective filing date under 35 U.S.C. 100(i) () of the claimed invention. A rejection
under 35 U.S.C. 102(a)(2) () or 35 U.S.C. 103 () should also be made if appropriate.
8. A provisional double patenting rejection should also be made in the copending application.
9. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other
under pre-AIA 35 U.S.C. 102(f) (mpep-9015-appx-l.html#d0e302383) or (g) () and the copending application has not been
disqualified as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection based on common ownership, a rejection should
additionally be made in the copending application under pre-AIA 35 U.S.C. 102(f) (mpep-9015-appx-l.html#d0e302383)
/103(a) () or 102(g) () /103(a) () using form paragraph 7.21.fti (#fp7.21.fti) , unless the patent is disqualified under pre-AIA 35
U.S.C. 103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection.
10. For applications being examined under pre-AIA law: If the disclosure of one application may be used to support a
rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph
7.21.01.fti (#fp7.21.01.fti) to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) () /103(a) () in the application with
the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e) () /103(a) () should not be made or maintained
if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) () as prior art in a pre-AIA 35 U.S.C. 103(a) () rejection.
11. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) () or 35 U.S.C. 103 () should also
be made if appropriate.
12. For applications being examined under pre-AIA law: See MPEP 1490 (s1490.html#d0e146976) for guidance regarding
terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections
remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) () and (e) are not taken into account in
determining which is the earlier-filed application for double patenting purposes.
13. For applications being examined under the AIA: See MPEP 1490 (s1490.html#d0e146976) for guidance regarding
terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections
remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) () and (e) are not taken into account in
determining which is the earlier-filed application when the application is being examined under the AIA for double patenting
purposes.
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finger ring was affirmed in view of an earlier issued design patent, where the drawing in both the design patent and the utility
application illustrated the same article. In re Phelan, 205 F.2d 183, 98 USPQ 156 (CCPA 1953). A double patenting rejection of a
design claim for a flashlight cap and hanger ring was affirmed over an earlier issued utility patent. In re Barber, 81 F.2d 231, 28
USPQ 187 (CCPA 1936). A double patenting rejection of claims in a utility patent application directed to a balloon tire construction
was affirmed over an earlier issued design patent. In re Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931).
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appx-l.html#d0e303040) [R-08.2012]
35 U.S.C. 121 (mpep-9015-appx-l.html#d0e303040) authorizes the Director to restrict the claims in a patent application to a single
invention when independent and distinct inventions are presented for examination. The third sentence of 35 U.S.C. 121 (mpep9015-appx-l.html#d0e303040) prohibits the use of a patent issuing on an application with respect to which a requirement for
restriction has been made, or on an application filed as a result of such a requirement, as a reference against any divisional
application, if the divisional application is filed before the issuance of the patent. The 35 U.S.C. 121 (mpep-9015-appxl.html#d0e303040) prohibition applies only where the Office has made a requirement for restriction. The prohibition does not apply
where the divisional application was voluntarily filed by the applicant and not in response to an Office requirement for restriction.
This apparent nullification of double patenting as a ground of rejection or invalidity in such cases imposes a heavy burden on the
Office to guard against erroneous requirements for restrictions where the claims define essentially the same invention in different
language and which, if acquiesced in, might result in the issuance of several patents for the same invention.
The prohibition against holdings of double patenting applies to requirements for restriction between the related subjects treated in
MPEP 806.04 (s806.html#d0e103749) through 806.05(j) (s806.html#d0e105372) , namely, between combination and
subcombination thereof, between subcombinations disclosed as usable together, between process and apparatus for its practice,
between process and product made by such process and between apparatus and product made by such apparatus, etc., so long
as the claims in each application are filed as a result of such requirement.
The following are situations where the prohibition against double patenting rejections under 35 U.S.C. 121 (mpep-9015-appxl.html#d0e303040) does not apply:
(A) The applicant voluntarily files two or more applications without a restriction requirement by the examiner. 35 U.S.C. 121
(mpep-9015-appx-l.html#d0e303040) requires claims of a divisional application to have been formally entered, restricted, and
removed from an earlier application in order to obtain the benefit of 35 U.S.C. 121 (mpep-9015-appx-l.html#d0e303040) .
Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1379, 68 USPQ2d 1865, 1870 (Fed. Cir. 2003) (For claims in
a divisional application that were not in the original application, 35 U.S.C. 121 (mpep-9015-appx-l.html#d0e303040) does
not suggest that the original application merely needs to provide some support for claims that are first entered formally in
the later divisional application. Id.); In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968).
(B) The claims of the different applications or patents are not consonant with the restriction requirement made by the
examiner, since the claims have been changed in material respects from the claims at the time the requirement was made.
For example, the divisional application filed includes additional claims not consonant in scope to the original claims subject
to restriction in the parent. Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991)
and Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990). In order for
consonance to exist, the line of demarcation between the independent and distinct inventions identified by the examiner in
the requirement for restriction must be maintained. 916 F.2d at 688, 16 USPQ2d at 1440.
(C) The restriction requirement was written in a manner which made it clear to applicant that the requirement was made
subject to the nonallowance of generic or other linking claims and such generic or linking claims are subsequently allowed.
Therefore, if a generic or linking claim is subsequently allowed, the restriction requirement must be withdrawn.
(D) The requirement for restriction (holding of lack of unity of invention) was only made in an international application by the
International Searching Authority or the International Preliminary Examining Authority.
(E) The requirement for restriction was withdrawn by the examiner before the patent issues. In re Ziegler, 443 F.2d 1211,
170 USPQ 129 (CCPA 1971). Note that a restriction requirement in an earlier-filed application does not carry over to claims
of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent
application. Reliance on a patent issued from such a continuation application to reject claims in a later-filed divisional
application is not prohibited under 35 U.S.C. 121 (mpep-9015-appx-l.html#d0e303040) . Bristol-Myers Squibb Co. v.
Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004).
(F) The claims of the second application are drawn to the same invention as the first application or patent.
Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784 F.2d 351, 228 USPQ 837 (Fed. Cir. 1986).
(G) Where a requirement for restriction between a product, a process of making the product, and a process of using the
product was made subject to the non-allowance of the product and the product is subsequently allowed. In this situation the
restriction requirement must be withdrawn.
While the situation should not arise where appropriate care is exercised in defining the independent and distinct inventions in a
restriction requirement, the issue might arise as to whether 35 U.S.C. 121 (mpep-9015-appx-l.html#d0e303040) prevents the use of
a double patenting rejection when the identical invention is claimed in both the patent and the pending application. Under these
circumstances, the Office will make the double patenting rejection because the patentee is entitled only to a single patent for an
invention. As expressed in Studiengesellschaft Kohle, 784 F.2d at 361, 228 USPQ at 844, (J. Newman, concurring), 35 U.S.C.
121 (mpep-9015-appx-l.html#d0e303040) of course does not provide that multiple patents may be granted on the identical
invention.
II. NONSTATUTORY
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A rejection based on a nonstatutory type of double patenting can be avoided by filing a terminal disclaimer in the application or
proceeding in which the rejection is made. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Knohl, 386 F.2d 476, 155
USPQ 586 (CCPA 1967); and In re Griswold, 365 F.2d 834, 150 USPQ 804 (CCPA 1966). The use of a terminal disclaimer in
overcoming a nonstatutory double patenting rejection is in the public interest because it encourages the disclosure of additional
developments, the earlier filing of applications, and the earlier expiration of patents whereby the inventions covered become freely
available to the public. In re Jentoft, 392 F.2d 633, 157 USPQ 363 (CCPA 1968); In re Eckel, 393 F.2d 848, 157 USPQ 415 (CCPA
1968); and In re Braithwaite, 379 F.2d 594, 154 USPQ 29 (CCPA 1967).
The use of a 37 CFR 1.131 (mpep-0010-title-page.html#d0e323504) affidavit in overcoming a double patenting rejection is
inappropriate because the claim or claims in the application are being rejected over a patent which claims the rejected invention.
In re Dunn, 349 F.2d 433, 146 USPQ 479 (CCPA 1965). 37 CFR 1.131 (mpep-0010-title-page.html#d0e323504) is inapplicable if the
claims of the application and the patent are directed to substantially the same invention. It is also inapplicable if there is a lack of
patentable distinctness between the claimed subject matter. Knell v. Muller, 174 USPQ 460 (Commr. Pat. 1971), citing the court
decisions in In re Ward, 236 F.2d 428, 111 USPQ 101 (CCPA 1956); In re Teague, 254 F.2d 145, 117 USPQ 284 (CCPA 1958);
and In re Hidy, 303 F.2d 954, 133 USPQ 65 (CCPA 1962).
A patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term of a patent. 35
U.S.C. 253 (mpep-9015-appx-l.html#d0e305379) . The statute does not provide for a terminal disclaimer of only a specified claim or
claims. The terminal disclaimer must operate with respect to all claims in the patent.
The filing of a terminal disclaimer to obviate a rejection based on nonstatutory double patenting is not an admission of the
propriety of the rejection. Quad Environmental Technologies Corp. v. Union Sanitary District, 946 F.2d 870, 20 USPQ2d 1392
(Fed. Cir. 1991). The court indicated that the filing of a terminal disclaimer simply serves the statutory function of removing the
rejection of double patenting, and raises neither a presumption nor estoppel on the merits of the rejection.
A terminal disclaimer filed to obviate a double patenting rejection is effective only with respect to the application identified in the
disclaimer, unless by its terms it extends to continuing applications. If an appropriate provisional nonstatutory double patenting
rejection is made in each of two or more pending applications, the examiner should follow the practice set forth in MPEP 804
(s804.html#d0e98894) , subsection I.B.1. in determining in which of the applications an appropriate terminal disclaimer must be
filed.
Claims that differ from each other (aside from minor differences in language, punctuation, etc.), whether or not the difference
would have been obvious, are not considered to be drawn to the same invention for double patenting purposes under 35 U.S.C.
101 (mpep-9015-appx-l.html#d0e302376) . In cases where the difference in claims would have been obvious, terminal disclaimers
are effective to overcome double patenting rejections. Where the subject matter of the reference and the claimed invention were
commonly owned at the time the invention was made, such terminal disclaimers must include a provision that the patent shall be
unenforceable if it ceases to be commonly owned with the other application or patent. Note 37 CFR 1.321(c) (mpep-9020-appxr.html#d0e326459) . 37 CFR 1.321(d) (mpep-9020-appx-r.html#d0e326459) sets forth the requirements for a terminal disclaimer
where the claimed invention resulted from activities undertaken within the scope of a joint research agreement as defined in 35
U.S.C. 103(c)(3) (mpep-9015-appx-l.html#d0e302450) . It should be emphasized that a terminal disclaimer cannot be used to
overcome a rejection under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) /103(a) (mpep-9015-appx-l.html#d0e302450) .
III. TERMINAL DISCLAIMER REQUIRED DESPITE REQUEST TO ISSUE ON COMMON ISSUE DATE
Applicants are cautioned that reliance upon a common issue date cannot effectively substitute for the filing of one or more terminal
disclaimers in order to overcome a proper double patenting rejection, particularly since a common issue date alone does not avoid
the potential problems of dual ownership by a common assignee, or by parties to a joint research agreement, of patents to
patentably indistinct inventions. In any event, the Office cannot ensure that two or more applications will have a common issue
date.
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37 C.F.R. 1.130 Affidavit or declaration to disqualify commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 (mpep-9015-appxl.html#d0e302450) on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b)
(mpep-9015-appx-l.html#d0e302383) , and the inventions defined by the claims in the application or patent under
reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and
the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the
patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior
art by submission of:
(1) A terminal disclaimer in accordance with 1.321(c) (mpep-9020-appx-r.html#d0e326459) ; and
(2) An oath or declaration stating that the application or patent under reexamination and patent or published
application are currently owned by the same party, and that the inventor named in the application or patent under
reexamination is the prior inventor under 35 U.S.C. 104 (mpep-9015-appx-l.html#d0e302559) .
(b) [Reserved]
I. DOUBLE PATENTING
Claims in commonly owned applications of different inventive entities may be rejected on the ground of double patenting. This is in
accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates
covering nearly identical subject matter. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the doctrine is well
established that claims in different applications need be more than merely different in form or content and that patentable
distinction must exist to entitle applicants to a second patent) and In re Christensen, 330 F.2d 652, 141 USPQ 295 (CCPA 1964).
Claims may also be rejected on the grounds of nonstatutory double patenting in certain non-commonly owned applications that
claim inventions resulting from activities undertaken with the scope of a joint research agreement as defined in 35 U.S.C. 103(c)
(3) (mpep-9015-appx-l.html#d0e302450) . This prevents the parties to the joint research agreement from obtaining two or more
patents with different expiration dates covering nearly identical subject matter. See the amendment to 35 U.S.C. 103(c) (mpep9015-appx-l.html#d0e302450) by the CREATE Act (Public Law 108-453; 118 Stat. 3596 (2004)).
Double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the provisions of 37 CFR
1.321(c) (mpep-9020-appx-r.html#d0e326459) , the terminal portion of the term of the later patent and including in the disclaimer a
provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or
patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. Double patenting
rejections can also be overcome in cases subject to a joint research agreement, under certain circumstances, by disclaiming the
terminal portion of the term of the later patent and including in the disclaimer the provisions of 37 CFR 1.321(d) (mpep-9020-appxr.html#d0e326459) .
See MPEP 706.02(l) - 706.02(l)(3) for information pertaining to establishment of common ownership and the existence of a
joint research agreement pursuant to 35 U.S.C. 103(c), as well as examination practice relating to 35 U.S.C. 103(c).
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or after December 10, 2004, and for reexamination proceedings in which the patent under reexamination issued after December
10, 2004, when:
(A) the later invention is not anticipated by the earlier invention under 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) ;
(B) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before
the date the claimed invention was made;
(C) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement;
and
(D) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the
joint research agreement.
IV.
Form paragraphs 8.27 (#fp8.27) , 8.28 (#fp8.28) and 8.28.01 (#fp8.28.01) may be used to require the applicant to name the prior
inventor under 37 CFR 1.78(c) (mpep-9020-appx-r.html#d0e320662) .
8.27
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under 35 U.S.C.
102(g) (mpep-9015-appx-l.html#d0e302383) and possibly 35 U.S.C. 102(f) (mpep-9015-appx-l.html#d0e302383) of this single
invention must be resolved.
Since the U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an
application of common ownership (see MPEP Chapter 2300 (mpep-2300.html#d0e237627) ), the assignee is required to state
which entity is the prior inventor of the conflicting subject matter. A terminal disclaimer has no effect in this situation since the basis
for refusing more than one patent is priority of invention under 35 U.S.C. 102(f) (mpep-9015-appx-l.html#d0e302383) or (g) and not
an extension of monopoly.
Failure to comply with this requirement will result in a holding of abandonment of this application.
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Examiner Note:
1. In bracket 3, insert the U.S. patent number or the copending application number.
2. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of
the other, do not use this form paragraph; see form paragraph 8.28 (#fp8.28) .
3. A provisional or actual statutory double patenting rejection should also be made using form paragraphs 8.31 (#fp8.31) or
8.32 (#fp8.32) .
4. If the commonly assigned application or patent has an earlier U.S. filing date, a rejection under 35 U.S.C. 102(e) (mpep9015-appx-l.html#d0e302383) may also be made using form paragraph 7.15.01 (#fp7.15.01) or 7.15.02 (#fp7.15.02) .
Examiner Note:
1. This form paragraph should be used when the application being examined is commonly assigned with a conflicting
application or patent, but there is no indication that they were commonly assigned at the time the invention was actually
made.
2. A rejection under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) /103(a) (mpep-9015-appx-l.html#d0e302450) using
form paragraph 7.21, (#fp7.21) 7.21.01 (#fp7.21.01) or 7.21.02 (#fp7.21.02) also should be made, as appropriate. For
applications pending on or after December 10, 2004, rejections under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383)
/103(a) (mpep-9015-appx-l.html#d0e302450) should not be made or maintained if the patent is disqualified under 35 U.S.C.
103(c) (mpep-9015-appx-l.html#d0e302450) as prior art in a 35 U.S.C. 103(a) (mpep-9015-appx-l.html#d0e302383) rejection.
3. In bracket 3, insert the number of the conflicting patent or application.
4. An obviousness-type double patenting rejection should also be included in the action using one of form paragraphs 8.34
(#fp8.34) to 8.37 (#fp8.37)
5. In bracket 4, explain why the claims in the conflicting cases are not considered to be distinct.
6. Form paragraph 8.28.01 (#fp8.28.01) MUST follow this paragraph.
8.28.01
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an
application of common ownership (see MPEP Chapter 2300 (mpep-2300.html#d0e237627) ). Commonly assigned [1], discussed
above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) (mpep-9015-appx-l.html#d0e302450) if the
commonly assigned case qualifies as prior art under 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) (e), (f) or (g) and the
conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner
to resolve this issue the assignee can, under 35 U.S.C. 103(c) (mpep-9015-appx-l.html#d0e302450) and 37 CFR 1.78(c) (mpep9020-appx-r.html#d0e320662) , either show that the conflicting inventions were commonly owned at the time the invention in this
application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a
rejection under 35 U.S.C. 103(a) (mpep-9015-appx-l.html#d0e302450) based upon the commonly assigned case as a reference
under 35 U.S.C. 102(f) (mpep-9015-appx-l.html#d0e302383) or (g), or 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) for
applications pending on or after December 10, 2004.
Examiner Note:
This form paragraph should follow form paragraph 8.28 (#fp8.28) and should only be used ONCE in an Office action.
If the provisions of 35 U.S.C. 103(c)(1) (mpep-9015-appx-l.html#d0e302450) apply to the commonly owned conflicting inventions of
different inventive entities or if the provisions of 35 U.S.C. 103(c)(2) (mpep-9015-appx-l.html#d0e302450) apply to non-commonly
owned inventions subject to a joint research agreement and thereby obviate the obviousness rejection(s), double patenting
rejection(s) should be made (or maintained) as appropriate. If, however, it is determined that the provisions of 35 U.S.C. 103(c)
(mpep-9015-appx-l.html#d0e302450) do NOT apply because the inventions were not commonly owned or subject to an obligation
of assignment to the same person at the time the later invention was made, or because the claimed invention did NOT result from
activities undertaken within the scope of a joint research agreement as required by 35 U.S.C. 103(c)(2) and (3) (mpep-9015-appxl.html#d0e302450) , and there is evidence of record to indicate that a patent or application is prior art against the application being
examined, the examiner should make (A) any appropriate double patenting rejection(s), and (B) the appropriate prior art
rejection(s) under 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) and/or 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) in
the application being examined. See Charts I-A, I-B, II-A, and II-B in MPEP 804 (s804.html#d0e98894) . Rejections under
35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) or 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) cannot be obviated
solely by filing a terminal disclaimer.
Examiner Note:
1. In bracket 2, insert the appropriate paragraph letter or letters of 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) in
parentheses. If paragraph (e) of 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) is applicable, use form paragraph
7.15.02 (#fp7.15.02) or 7.15.03 (#fp7.15.03) .
2. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
3. In bracket 4, insert the prior art relied upon.
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4. This rejection must be preceded either by form paragraph 7.07 (#fp7.07) and form paragraphs 7.08 (#fp7.08) , 7.09
(#fp7.09) , and 7.14 (#fp7.14) as appropriate, or by form paragraph 7.103 (#fp7.103) .
5. If 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) is also being applied, this form paragraph must be followed by
either form paragraph 7.15.02 (#fp7.15.02) or 7.15.03 (#fp7.15.03) .
7.19
Claim [1] rejected under 35 U.S.C. 102(f) (mpep-9015-appx-l.html#d0e302383) because the applicant did not invent the claimed
subject matter. [2]
Examiner Note:
1. This paragraph must be preceded either by paragraphs 7.07 (#fp7.07) and 7.13 (#fp7.13) or by paragraph 7.103
(#fp7.103) .
2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP
2137 (s2137.html#d0e206570) .
7.21
Claim [1] rejected under 35 U.S.C. 103(a) (mpep-9015-appx-l.html#d0e302450) as being unpatentable over [2].
Examiner Note:
1. This paragraph must be preceded by either form paragraph 7.20 (#fp7.20) or form paragraph 7.103 (#fp7.103) .
2. An explanation of the rejection applying the Graham v. Deere test must follow this form paragraph.
3. If the rejection relies upon prior art under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) , use 35 U.S.C. 102(e)
(mpep-9015-appx-l.html#d0e302383) as amended by the American Inventors Protection Act to determine the references
prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has
an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) (mpep-9015-appxl.html#d0e302383) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an
international application (application under 35 U.S.C. 371) (mpep-9015-appx-l.html#d0e307164) which has an international
filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 (mpep-0010-titlepage.html#d0e303023) , 121 (mpep-9015-appx-l.html#d0e303040) or 365(c) (mpep-9015-appx-l.html#d0e307034) to an
international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form
paragraphs 7.12 (#fp7.12) and 7.12.01 (#fp7.12.01) to assist in the determination of the references 35 U.S.C. 102(e) (mpep9015-appx-l.html#d0e302383) date.
4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under 35 U.S.C. 102 (mpep-9015appx-l.html#d0e302383) (a) or 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) (b)) prevents the reference from being
disqualified under 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) (c), form paragraph 7.20.01 (#fp7.20.01) must follow
this form paragraph.
5. If this rejection is a provisional 35 U.S.C. 103(a) (mpep-9015-appx-l.html#d0e302450) rejection based upon a copending
application that would comprise prior art under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) if patented or
published, use form paragraph 7.21.01 (#fp7.21.01) instead of this paragraph.
Examiner Note:
1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application
having an earlier U.S. filing date and also having either a common assignee or at least one common inventor. This form
paragraph should not be used in applications pending on or after December 10, 2004 when the copending application is
disqualified under 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) (c) as prior art in a 35 U.S.C. 103 (mpep-9015-appxl.html#d0e302450) (a) rejection. See MPEP 706.02 (s706.html#d0e58220) (l)(3).
2. Use 35 U.S.C. 102(e (mpep-9015-appx-l.html#d0e302383) ) as amended by the American Inventors Protection Act (AIPA)
to determine the copending application references prior art date, unless the copending application reference is based
directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If
the copending application reference is either a national stage of an international application (application under 35 U.S.C.
371 (mpep-9015-appx-l.html#d0e307164) ) which has an international filing date prior to November 29, 2000, or a continuing
application claiming benefit under 35 U.S.C. 120 (mpep-0010-title-page.html#d0e303023) , 121 (mpep-9015-appxl.html#d0e303040) , or 365(c) (mpep-9015-appx-l.html#d0e307034) to an international application having an international
filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) to determine the
copending application references prior art date. See the Examiner Notes for form paragraphs 7.12 (#fp7.12) and 7.12.01
(#fp7.12.01) to assist in the determination of the 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) date.
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3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01 (#fp7.15.01) .
4. In bracket 3, insert either --assignee-- or --inventor--.
5. In bracket 4, insert explanation of obviousness.
6. If the claimed invention is also claimed in the copending application, a provisional obviousness double patenting rejection
should additionally be made using paragraph 8.33 (#fp8.33) and 8.37 (#fp8.37) .
7. If evidence indicates that the copending application is also prior art under 35 U.S.C. 102(f) or (g) (mpep-9015-appxl.html#d0e302383) and the copending application has not been disqualified as prior art in a 35 U.S.C. 103(a) (mpep-9015appx-l.html#d0e302450) rejection pursuant to 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) (c), a rejection should
additionally be made under 35 U.S.C. 103(a) (mpep-9015-appx-l.html#d0e302450) using paragraph 7.21 (e.g., applicant has
named the prior inventor in response to a requirement made using paragraph 8.28 (#fp8.28) ).
Further, if the conflicting applications have different effective U.S. filing dates, the examiner should consider making a provisional
rejection in the later filed application, based on the earlier filed application, under 35 U.S.C. 102(e) (mpep-9015-appxl.html#d0e302383) or 102(e)/103(a), using form paragraph 7.15.01 (#fp7.15.01) or 7.21.01 (#fp7.21.01) . Similarly, if an application
has a later effective U.S. filing date than a conflicting issued patent, the examiner should consider making a rejection in the
application, based on the patent, under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) or 102(e)/103(a), using form
paragraph 7.15.02 (#fp7.15.02) or 7.21.02 (#fp7.21.02) . Rejections under 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) or 103
cannot be obviated solely by the filing of a terminal disclaimer. However, for applications pending on or after December 10, 2004,
rejections under 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) (e)/103 (mpep-9015-appx-l.html#d0e302450) (a) should not be
made or maintained if the patent is disqualified under 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) (c) as prior art in a 35
U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) (a) rejection.
7.15.01 Provisional Rejection, 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) Common Assignee or At Least One Common Inventor
Claim [1] provisionally rejected under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) as being anticipated by copending
Application No. [2] which has a common [3] with the instant application.
Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(e)
(mpep-9015-appx-l.html#d0e302383) , if published under 35 U.S.C. 122(b) (mpep-9015-appx-l.html#d0e303054) or patented. This
provisional rejection under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) is based upon a presumption of future publication
or patenting of the copending application. [4].
This provisional rejection under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) might be overcome either by a showing
under 37 CFR 1.132 (mpep-9020-appx-r.html#d0e323552) that any invention disclosed but not claimed in the copending application
was derived from the inventor of this application and is thus not the invention by another, or by an appropriate showing under 37
CFR 1.131 (mpep-0010-title-page.html#d0e323504) .
This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885
(Fed. Cir. 1991).
Examiner Note:
1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses
the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a
common assignee or at least one common inventor.
2. Use 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) as amended by the American Inventors Protection Act and the
Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12 (#fp7.12) ) to determine
the copending application references prior art date, unless the copending application reference is based directly, or
indirectly, from an international application which has an international filing date prior to November 29, 2000. If the
copending application reference is either a national stage of an international application (application under 35 U.S.C. 371
(mpep-9015-appx-l.html#d0e307164) ) which has an international filing date prior to November 29, 2000, or a continuing
application claiming benefit under 35 U.S.C. 120 (mpep-0010-title-page.html#d0e303023) , 121 (mpep-9015-appxl.html#d0e303040) , or 365(c (mpep-9015-appx-l.html#d0e307034) ) to an international application having an international
filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) (form paragraph
7.12.01 (#fp7.12.01) ). See the Examiner Notes for form paragraphs 7.12 (#fp7.12) and 7.12.01 (#fp7.12.01) to assist in the
determination of the 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) date.
3. If the claims would have been obvious over the invention disclosed in the other copending application, use form
paragraph 7.21.01 (#fp7.21.01) .
4. In bracket 3, insert either --assignee-- or --inventor--.
5. In bracket 4, an appropriate explanation may be provided in support of the examiners position on anticipation, if
necessary.
6. If the claims of the copending application conflict with the claims of the instant application, a provisional double patenting
rejection should also be given using form paragraphs 8.30 (#fp8.30) and 8.32 (#fp8.32) .
7. If evidence is additionally of record to show that either invention is prior art unto the other under 35 U.S.C. 102(f) or (g), a
rejection using form paragraphs 7.13 (#fp7.13) and/or 7.14 (#fp7.14) should also be made.
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page.html#d0e323504) .
Examiner Note:
1. This form paragraph is used to reject over a patent or patent application publication with an earlier filing date that
discloses but does not claim the same invention. The patent or patent application publication must have either a common
assignee or a common inventor.
2. 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) as amended by the American Inventors Protection Act of 1999
(AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12
(#fp7.12) ) must be applied if the reference is one of the following:
a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a) (mpep-9015-appxl.html#d0e302673) ;
a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application if the
international application has an international filing date on or after November 29, 2000.
See the Examiner Notes for form paragraph 7.12 (#fp7.12) to assist in the determination of the 35 U.S.C. 102(e)
(mpep-9015-appx-l.html#d0e302383) date of the reference.
3. Pre-AIPA 35 U.S.C 102(e) (mpep-9015-appx-l.html#d0e302383) (form paragraph 7.12.01 (#fp7.12.01) ) must be applied if
the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29,
2000. See the Examiner Notes for form paragraph 7.12.01 (#fp7.12.01) to assist in the determination of the 35 U.S.C. 102(e)
(mpep-9015-appx-l.html#d0e302383) date of the reference.
4. In determining the 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) date, consider priority/benefit claims to earlierfiled U.S. provisional applications under 35 U.S.C. 119(e), (mpep-9015-appx-l.html#d0e302921) U.S. nonprovisional
applications under 35 U.S.C. 120 (mpep-0010-title-page.html#d0e303023) or 121 (mpep-9015-appx-l.html#d0e303040) , and
international applications under 35 U.S.C. 120 (mpep-0010-title-page.html#d0e303023) , 121 (mpep-9015-appxl.html#d0e303040) or 365(c) (mpep-9015-appx-l.html#d0e307034) if the subject matter used to make the rejection is
appropriately supported in the relied upon earlier-filed applications disclosure (and any intermediate application(s)). A
benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to
November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1),
(2) and (4) (mpep-9015-appx-l.html#d0e307164) were fulfilled. Do NOT consider any priority/benefit claims to U.S.
applications which are filed before an international application that has an international filing date prior to November 29,
2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a)-(d) (mpep-9015-appx-l.html#d0e302921) and 365(a)
(mpep-9015-appx-l.html#d0e307034) .
5. If the reference is a publication of an international application (including voluntary U.S. publication under 35 U.S.C. 122
(mpep-9015-appx-l.html#d0e303054) of the national stage or a WIPO publication) that has an international filing date prior to
November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form
paragraph. Such a reference is not a prior art reference under 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) . The
reference may be applied under 35 U.S.C. 102(a) or (b) (mpep-9015-appx-l.html#d0e302383) as of its publication date. See
form paragraphs 7.08 (#fp7.08) and 7.09 (#fp7.09) .
6. In bracket 3, insert either --assignee-- or --inventor--.
7. This form paragraph must be preceded by either of form paragraphs 7.12 (#fp7.12) or 7.12.01 (#fp7.12.01) .
8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12 (#fp7.12) .
Examiner Note:
1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application
having an earlier U.S. filing date and also having either a common assignee or at least one common inventor. This form
paragraph should not be used in applications pending on or after December 10, 2004 when the copending application is
disqualified under 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) (c) as prior art in a 35 U.S.C. 103 (mpep-9015-appxl.html#d0e302450) (a) rejection. See MPEP 706.02 (s706.html#d0e58220) (l)(3).
2. Use 35 U.S.C. 102(e (mpep-9015-appx-l.html#d0e302383) ) as amended by the American Inventors Protection Act (AIPA)
to determine the copending application references prior art date, unless the copending application reference is based
directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If
the copending application reference is either a national stage of an international application (application under 35 U.S.C.
371 (mpep-9015-appx-l.html#d0e307164) ) which has an international filing date prior to November 29, 2000, or a continuing
application claiming benefit under 35 U.S.C. 120 (mpep-0010-title-page.html#d0e303023) , 121 (mpep-9015-appxl.html#d0e303040) , or 365(c) (mpep-9015-appx-l.html#d0e307034) to an international application having an international
filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) to determine the
copending application references prior art date. See the Examiner Notes for form paragraphs 7.12 (#fp7.12) and 7.12.01
(#fp7.12.01) to assist in the determination of the 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) date.
3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01 (#fp7.15.01) .
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Examiner Note:
1. This paragraph is used to reject over a reference (patent or published application) with an earlier filing date that discloses
the claimed invention, and that only qualifies as prior art under 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) (e). If the
reference qualifies as prior art under 35 U.S.C. 102 (mpep-9015-appx-l.html#d0e302383) (a) or (b), then this form paragraph
should not be used (form paragraph 7.21 (#fp7.21) should be used instead). The reference must have either a common
assignee or at least one common inventor. This form paragraph should not be used in applications when the reference is
disqualified under 35 U.S.C. 103 (mpep-9015-appx-l.html#d0e302450) (c) as prior art in a 35 U.S.C. 103(a) rejection. See
MPEP 706.02(l)(3) (s706.html#d0e58220) .
2. 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) as amended by the American Inventors Protection Act of 1999
(AIPA) must be applied if the reference is one of the following:
a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a) (mpep-9015-appxl.html#d0e302673) ;
a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application if the
international application has an international filing date on or after November 29, 2000.
See the Examiner Notes for form paragraph 7.12 (#fp7.12) to assist in the determination of the 35 U.S.C. 102(e)
(mpep-9015-appx-l.html#d0e302383) date of the reference.
3. Pre-AIPA 35 U.S.C 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an
international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01 (#fp7.12.01)
to assist in the determination of the 35 U.S.C. 102(e) (mpep-9015-appx-l.html#d0e302383) date of the reference.
4. In bracket 3, insert either --assignee-- or --inventor--.
5. In bracket 4, insert explanation of obviousness.
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